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Friday, 8 February 2008

The IPKat brings you some highlights of the Trade Mark Registry's recent decisions:

Application to invalidate MASALA - the word mark MASALA was invalidated by Mr Hearing Officer Foley. He found that the sign, a constituent verbal component of various Indian spice mixtures, was both descriptive and customary in the trade for“cooked vegetables” in the Class 29 specification, “preparations made from cereals” in the Class 30 specification, and “foodstuffs comprising or made from any of the aforesaid goods”. The mark was merely descriptive for “infusions” and “tea and tea-based beverages”. However, it was valid in relation to beers and soft drinks. The IPKat thinks this is the right decision - he's not sure how this one got on the Register in the first place.

PUCCI Designer Petwear - the designer Emilio Pucci successfully opposed this mark under s.5(4) (earlier right protected by passing off). The decision is interesting from the passing off point of view as proof that you really don't need a common field of activity to succeed in a passing off claim. Mr Hearing Officer Landau found that the misrepresentation came as a result of the fact that a number of other designers had branched out into the petwear field. The damage came not only from potentially confused consumers, but also from the fact that there was a risk that the trade mark applicant would make low quality goods. The IPKat notes that such reasoning has been rejected by the Registry for the purposes of establishing detriment to repute under s.5(3).

MFI Make It Happen - Royal Bank of Scotland failed to convince Mr Hearing Office Reynolds that it had the goodwill in the slogan 'Make It Happen' that would allow it to assert an earlier right protected by passing off because it had used the slogan extensively with its housemark RBS. The IPKat notes that there appear to be an awful lot of s.5(4) cases floating around at the moment and wonders if there's a particular reason for it.

4 comments:

Mcvooty
said...

A beer or soft drink that is characterized by the flavor of masala is a (perhaps new) type of beverage that traders ought to be able to call "masala beer" or "masala soda." A registration of "masala" for such goods gives the trademark owner an unfair competitive advantage.

Thanks to you both. Further to what Mcvooty has said, this seems like what the ECJ is talking about when it keeps harping on about need to keep free - a situation where goods aren't currently being produced that would fit that description, but could be produced in the future (though, for the sake of the nation's tastebuds, I hope Masala flavoured beer is a long time coming!)

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